Patent Pros Experience: How much is enough? Forum

[Anonymous User]

Lots of talk around here regarding patent pros yielding better exit options than IP lit so my question is, how much is "enough"? For example, if I wanted to do 4 or 5 years in biglaw and start out doing patent prosecution, if I were to later lateral and do only IP Lit before trying to exit to in house, what amount of patent pros experience prior to a move to lit only would be sufficient to lean on for a move out of big law? I realize there is no hard and fast answer but hoping some may have some insight.

[gk101]

the move from pros -> lit is easier said than done. Once you get started with pros only, a lot of firms would be hesitant to bring you on in lit as a mid level.

As far as biglaw -> in house transition, it just depends on what exactly you want want to do. A lot of tech/pharma companies with big IP groups are now hiring second and third years to handle the patent portfolios in house

[Anonymous User]

Lots of talk around here regarding patent pros yielding better exit options than IP lit so my question is, how much is "enough"? For example, if I wanted to do 4 or 5 years in biglaw and start out doing patent prosecution, if I were to later lateral and do only IP Lit before trying to exit to in house, what amount of patent pros experience prior to a move to lit only would be sufficient to lean on for a move out of big law? I realize there is no hard and fast answer but hoping some may have some insight.

I agree with the above poster that it can actually be pretty tricky to transition from pros to lit. If this is something you want to do, make sure you go to a firm that will give you experience with both. Many firms may be reluctant to take you on as a lit lateral if you have no lit experience (even if you have the scientific/pros background that will help you understand the patents in dispute). Some firms will not even let you work on their own lit team if you're doing pros, or vice-versa (depends on egos/etc.). So do keep that in mind.

That said, I think 4-5 years at a biglaw firm doing pros and lit will likely make you pretty attractive to a company for in-house work, provided you're given a lot of responsibility in those years, depending on the industry you're looking for. But it also highly depends on what kind of work you want to do in-house. You can go in-house with just a few years of pros experience; but you'll only do pros/portfolio management. You can go in-house with just lit experience; but then you'll likely just be handling/supervising litigations. You could get both experiences and get hired just to approve budgets for the company's IP portfolio. This all can also change depending on whether the client relies heavily on OC or not. It depends on the company and what you want to do once you're in the company.

[Abbie Doobie]

honestly if you were interested in going in house after getting some patent pros experience you would be better off supplementing your pros experience with some transactional experience (IP trans, m&s support, licensing, etc.) rather than with lit experience. the transactional experience will be far more beneficial for in house, both from an interviewing perspective as well as helping you do the job.

[Anonymous User]

honestly if you were interested in going in house after getting some patent pros experience you would be better off supplementing your pros experience with some transactional experience (IP trans, m&s support, licensing, etc.) rather than with lit experience. the transactional experience will be far more beneficial for in house, both from an interviewing perspective as well as helping you do the job.

Thoughts on just doing transactional right out if I could get it? Are there drawbacks to forgoing pros experience while I'm a cheap first-/second-year despite being patent bar eligible?

[trmckenz]

honestly if you were interested in going in house after getting some patent pros experience you would be better off supplementing your pros experience with some transactional experience (IP trans, m&s support, licensing, etc.) rather than with lit experience. the transactional experience will be far more beneficial for in house, both from an interviewing perspective as well as helping you do the job.

This. Why would you do IP Lit and expect to lateral in-house?

Biglaw associates can typically lateral from biglaw to in-house with 2-5 years of prosecution experience, depending on which companies/industries you want. There are also different levels of in-house roles that become open to you as you gain more experience (i.e., you don't have to start at the bottom of the corporate totem pole).

[Abbie Doobie]

honestly if you were interested in going in house after getting some patent pros experience you would be better off supplementing your pros experience with some transactional experience (IP trans, m&s support, licensing, etc.) rather than with lit experience. the transactional experience will be far more beneficial for in house, both from an interviewing perspective as well as helping you do the job.

Thoughts on just doing transactional right out if I could get it? Are there drawbacks to forgoing pros experience while I'm a cheap first-/second-year despite being patent bar eligible?

yes the drawback is that, due to most pros being fee capped, you become too expensive to do it if you don't learn it as a first year. people have been saying that going from pros -> lit is tough but going from anything -> pros as a 2-3 yr is practically impossible. i think you would have to switch firms to reset your seniority (and thus your billing rate) to break into pros after a few years.

ime, what happens is that you do some pros work for a partner and the partner eventually puts you on interesting transactional projects if you do a good job with the pros work.

[Anonymous User]

honestly if you were interested in going in house after getting some patent pros experience you would be better off supplementing your pros experience with some transactional experience (IP trans, m&s support, licensing, etc.) rather than with lit experience. the transactional experience will be far more beneficial for in house, both from an interviewing perspective as well as helping you do the job.

This. Why would you do IP Lit and expect to lateral in-house?

Biglaw associates can typically lateral from biglaw to in-house with 2-5 years of prosecution experience, depending on which companies/industries you want. There are also different levels of in-house roles that become open to you as you gain more experience (i.e., you don't have to start at the bottom of the corporate totem pole).

Because I'd be lateraling markets (back to home secondary) and with the commoditization of pros I've found its really hard to get pros work outside of DC/SV at a big firm or even a major boutique. The last thing you mention is why id prefer to lateral later and am wondering if it would make a difference if I went from mostly pros to mostly lit for a while or something like 50/50 to mostly lit.

I get that it's not an ideal trajectory and I am not planning on it, but am curious how it may be viewed when looking to exit.

[Anonymous User]

honestly if you were interested in going in house after getting some patent pros experience you would be better off supplementing your pros experience with some transactional experience (IP trans, m&s support, licensing, etc.) rather than with lit experience. the transactional experience will be far more beneficial for in house, both from an interviewing perspective as well as helping you do the job.

Thoughts on just doing transactional right out if I could get it? Are there drawbacks to forgoing pros experience while I'm a cheap first-/second-year despite being patent bar eligible?

yes the drawback is that, due to most pros being fee capped, you become too expensive to do it if you don't learn it as a first year. people have been saying that going from pros -> lit is tough but going from anything -> pros as a 2-3 yr is practically impossible. i think you would have to switch firms to reset your seniority (and thus your billing rate) to break into pros after a few years.

Yeah that's what I've heard. In an interview at a GP with a big IP practice, one interviewer mentioned he knew a seventh year litigator that dropped to a first year on the lockstep just to do pros in preparation for an exit.

[Anonymous User]

The in-house market is drying up a bit right now due to tightening legal budgets. But over the last 2 years when many companies were ramping up their patent groups, many of my firm's clients began hiring patent litigators to manage prosecution portfolios. There are so few prosecutors nowadays and even fewer interested in going in-house. It's always awkward because they (patent litigators) know less than a summer associate. But it's becoming increasingly common.

[trmckenz]

The in-house market is drying up a bit right now due to tightening legal budgets. But over the last 2 years when many companies were ramping up their patent groups, many of my firm's clients began hiring patent litigators to manage prosecution portfolios. There are so few prosecutors nowadays and even fewer interested in going in-house. It's always awkward because they (patent litigators) know less than a summer associate. But it's becoming increasingly common.

True - big picture, patent experience is patent experience.

OP, I think you're thinking about it the right way. Maybe focus on lateraling to a firm in your home market that services clients you like, that way your chances of going in-house at one of them increases. I don't think there's any time requirement for doing pros work to go in-house (although I think two years is a good minimum), but pros experience definitely needs to be a part of your narrative when interviewing. Particularly, it allows your to explain how doing pros has exposed you to the corporate side of things with diligence projects, reviewing agreements, etc. Even six months of pros experience would be better than no pros experience.

A less common route would be to join an IP diligence support practice group for a firm's M&A team. Unsure if there are any firms that have such a group in your home market, but that might allow you to get more exposure to corporate work.

[Anonymous User]

Thanks for all the insight, everyone

[84651846190]

IP litigation is shit compared to prosecution. Why would you want to do it?

[84651846190]

The in-house market is drying up a bit right now due to tightening legal budgets. But over the last 2 years when many companies were ramping up their patent groups, many of my firm's clients began hiring patent litigators to manage prosecution portfolios. There are so few prosecutors nowadays and even fewer interested in going in-house. It's always awkward because they (patent litigators) know less than a summer associate. But it's becoming increasingly common.

Most patent prosecutors are really shitty, so I can't imagine hiring a half-intelligent patent litigator would be a downgrade.

[Anonymous User]

IP litigation is shit compared to prosecution. Why would you want to do it?

I don't. See above re: lateraling markets and the relative difficulty of finding pros. The problem is tho is I've heard your pay in inhouse is permanently affected by the year in which you lateral more or less. So is likely try and lateral a couple years before exiting but may be forced to explore lit options.

[Anonymous User]

The in-house market is drying up a bit right now due to tightening legal budgets. But over the last 2 years when many companies were ramping up their patent groups, many of my firm's clients began hiring patent litigators to manage prosecution portfolios. There are so few prosecutors nowadays and even fewer interested in going in-house. It's always awkward because they (patent litigators) know less than a summer associate. But it's becoming increasingly common.

Most patent prosecutors are really shitty, so I can't imagine hiring a half-intelligent patent litigator would be a downgrade.

It kind of is because most patent attorneys are really shitty. Also, patents are garbage!

[orangered]

IP litigation is shit compared to prosecution. Why would you want to do it?

If you've ever had to write a non-provisional application for $6k you know the answer to that.

[Anonymous User]

IP litigation is shit compared to prosecution. Why would you want to do it?

If you've ever had to write a non-provisional application for $6k you know the answer to that.

Ouch, unless your billing rate is like $200... Normally $9-10k is bad enough, it's why I'd usually rather get anything but a pros assignment on fixed fee...

[Anonymous User]

IP litigation is shit compared to prosecution. Why would you want to do it?

If you've ever had to write a non-provisional application for $6k you know the answer to that.

Yes, this.

It's bad enough for non-lawyers to do this if they're billing above $250; imagine how much it sucks to write an app for $6k when you're already billing at a first year associate rate. And then imagine how much it sucks when you get $2.5k-$3k at your first year rate to respond to office actions. And then imagine how much it sucks when you're given three applications and a handful of office actions for a device that does some bio thing more efficiently, due in a couple weeks with those budgets, and you've never taken a bio class in your life, because everyone else is busy and they're more than happy to dump the work that they also don't understand on you so that they can meet hours.

Patent pros can be really interesting and rewarding, but at least with lit you don't have to worry about any of that stuff.

[Anonymous User]

There are firms that will let you do both pros and lit, assuming you can do both well. If you want this, you have to make it a priority during recruiting because most of the firms that get a decent amount of lit work have designated prosecutors and designated litigators with very little cross-over.

[Anonymous User]

IP litigation is shit compared to prosecution. Why would you want to do it?

If you've ever had to write a non-provisional application for $6k you know the answer to that.

Ouch, unless your billing rate is like $200... Normally $9-10k is bad enough, it's why I'd usually rather get anything but a pros assignment on fixed fee...

On a fixed fee arrangement like this, what fraction of the bill is typically allotted for your billables? For example, say it's an 9k budget and you bill $300 per hour. How many hours would the firm expect you to bill for the project? 30 hours would be full budget.

[orangered]

IP litigation is shit compared to prosecution. Why would you want to do it?

If you've ever had to write a non-provisional application for $6k you know the answer to that.

Ouch, unless your billing rate is like $200... Normally $9-10k is bad enough, it's why I'd usually rather get anything but a pros assignment on fixed fee...

On a fixed fee arrangement like this, what fraction of the bill is typically allotted for your billables? For example, say it's an 9k budget and you bill $300 per hour. How many hours would the firm expect you to bill for the project? 30 hours would be full budget.

It depends on many things, such as: whether the partner is going to spend a lot of time reviewing your work, whether other people's work (e.g., filing, making formal drawings, preparing IDFs, etc.) falls into that budget, how hands-on the inside counsel and inventors are (especially whether they want to do multiple iterations), and whether the firm is willing to take a loss on the project. Given all these variables it's hard to give concrete numbers but an effective budget of $6-8k would be common.

[Anonymous User]

IP litigation is shit compared to prosecution. Why would you want to do it?

If you've ever had to write a non-provisional application for $6k you know the answer to that.

Ouch, unless your billing rate is like $200... Normally $9-10k is bad enough, it's why I'd usually rather get anything but a pros assignment on fixed fee...

On a fixed fee arrangement like this, what fraction of the bill is typically allotted for your billables? For example, say it's an 9k budget and you bill $300 per hour. How many hours would the firm expect you to bill for the project? 30 hours would be full budget.

Depends entirely on the filing fees that are included in that budget, whether your firm has fixed fees it adds just for the process of filing an app (even if you are literally the only one who touches it), the billing rate of the partner/supervisory associate and how long they take to bill, whether you have paras or secretaries taking care of transmittals, etc. A partner may bill as high as $800-$1000 per hour.

You may or may not get told how much of the budget you should leave for everything. Some partners will clearly lay this all out, and some expect you to know all of these factors and "plan accordingly" (even when you may not know a lot of this info, like whether or not the partner is going to kick the transmittals to a para, how long (s)he's going to take to review the draft, etc.). I have never really been told how much time to allocate for my billables, but I typically try to leave at least a third of the budget for partner billing/fees/etc. But it's hard when the budget maxes at $10k, you're billing $300+, and/or when you're dealing with difficult clients/inventors.

[84651846190]

At least you have work in patent pros. Most patent litigators are starving for work right now, except for the IPR dweebs.

[Anonymous User]

At least you have work in patent pros. Most patent litigators are starving for work right now, except for the IPR dweebs.

Well that assumes you can bill for all your work, which all these posts are saying isn't the case.

Having pros work means nothing if you have to cut half your hours because of fixed fees. If a partner is breathing down your neck because the client refuses to pay more than $6k for something that should cost $10-20k, you don't get to stop when you hit $6k, or to say "Hey it's going to cost more, either you raise the budget or this is all you get"--you're going to be told to "learn to be more efficient" (i.e., don't make the rest of the billables over the $6k the partner's problem). If you get to be the lucky person who is determined to be "efficient," you may get stuck with all the $6k-clients, causing you to end up being in the office doing 12-14 hours of work, of which you can only bill like 6 hours.